This assignment is based on Legal concept the assignment covers the Intellectual Property Act 36 of 2003, and other concept relates to the unfair competition and Admissibility of a mark. We have selected the Spirits of Srilanka to apply the theory which would make the assignment easier to understand and more users friendly.

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Table of Contains
1. Executive Summery 5
2. Introduction & Background 6
3. Point of view of Managing director and Marketing manager 7
4. Intellectual Property Act No 36 of 2003 7
5. Brand name infringement 9
6. Some argument support to managing director 9
7. Intellectual Property Act No 36 of 2003 Section 103(1) 12
8. Generic signs or indications 13
9. Some argument support to managing director 14
10. Recommendations & Conclusions 15
11. Annexure 16

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1. Executive Summary
This assignment is based on Legal concept the assignment covers the Intellectual Property Act
36 of 2003, and other concept relates to the unfair competition and Admissibility of a mark.
We have selected the Spirits of Srilanka to apply the theory which would make the assignment
easier to understand and more users friendly.
To explain the two major topics we have divided the assignment in to two tasks. Which the
task one we talk about Trademark infringement, Unfair competition and Intellectual Property Act
36 of 2003 section no 160. And we have used some example to explain the scenario.
And In the task two we have talk about Intellectual Property Act No 36 of 2003 Section
103(1), Generic signs or indications and some example that is relevant to the scenario. Finally
we concluded our assignment by giving the recommendation.

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2. Introduction & Background
“SPIRITS OF SRILANKA” is a brewer and seller of locally manufactured beer in srilanka and
leader in field. Its general brand name is SOS. It sells a brand of beer under the name “Extra
Beer” with a distinctive mark and a gets up. This mark is registered under the INTELLECTUAL
PROPERTY ACT 36 OF 2003. Within the few years it reached its target Arrack Consumers
shifted to this “Extra Special beer” as it contained more than 8% of Alcohol as against standard
beers that had less than 4 % alcohol content.
“POWER OF SRILANKA” a recently established brewing company also. Introduced a bear
under the same “Extra Special Beer” with their own general Brand “POS”. In the registered
Trade mark their general brand “POS” Extra Special Beer, and a macho man showing thumbs up
sign was found in the label.
So SOS is contemplating filling a case against POS for the following:
- POS is infringing the SOS’s right as the registered trade mark owner.
- POS is Guilty of Unfair Competition Within the section 160 of IPA
In this scenario there is a conflict between Marketing Manager and Managing Director.

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1. Point of view of Managing director and Marketing manager
This assignment focus on two side of argument about this scenario that is
 The managing director’s point of view: POS is infringing the SOS’S Rights as the
registered trade mark owner. And according to the Act of Competition Contrary to
Competition contrary to honest trade practices sprits cannot allow this to go on and
observe that their market penetrated by a new comer. SOS was the creator of this brand
and they need to have the exclusive rights to use it.
 The marketing manager’s point of view :In accordance with the Intellectual Property
Act No 36 of 2003 sec no 103(1), it could be a tough legal battle as ‘Extra Special Beer”
could be classified as description of the goods and it be argued that no person can claims
exclusive rights to the use of such words.
2. Intellectual Property Act No 36 of 2003
Intellectual Property Act No 36 of 2003 is an n act to provide for the law relating to
intellectual property and for an efficient procedure for the registration, control and administration
there of: to amend customs Ordinance ( Chapter 235) and high court of the provinces (special)
provisions act no, 10 of 1996, and to provide act no : 10 of 1996. This is describes about
Intellectual property is an intangible property. Intangible property has a unique features, created
by human intellect, covers the ideas, inventions, literary creations, unique names, models, logos,
industrial processes, computer software programs, it has a monetary value, it is owned, sold or
licensed to another person to use.
In the act of Intellectual Property Act No: 36 2003, Section no 160 describes the unfair
competition. This term is particularly applied to the practice of endeavoring to substitute one’s
own goods or products in the market for those of another for the purpose of deceiving the public.
This deception is commonly accomplished by imitating or counterfeiting the name title, size,
color scheme, patterns, shape or distinctive peculiarities of the article, or by imitating the shape
color, label, wrapper or general appearance of the package in such as way as to mislead the
general public or deceive an unwary purchaser. Section no 160 Describes more subject matter
about the unfair competition following points are describes in the section no 160:
 Any act or practice carried out or engaged in the course of industrial or commercial
activities that are information contrary to honest practices shall constitute an act of unfair.

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 The provisions of this section shall apply independently of, and in addition to, other
provisions of the Act protecting inventions, industrial designs, marks, trade names,
literary, scientific and artistic works and other intellectual property.
 Any act or practice carried out or engaged in, in the course of industrial or commercial
activities, that causes, or is likely to cause, confusion with respect to another's enterprise
or its activities, in particular, the products or services offered by such enterprise, shall
constitute an act of unfair competition.
 Confusion may, in particular, be caused with respect to-
(a) a mark, whether registered or not;
(b) a trade name ;
(c) a business identifier other than a mark or trade name ;
(d) the appearance of a product;
(e) the presentation of products or services ;
(f) Celebrity or a well known fictional character.
 Any act or practice carried out or engaged in, in the course of industrial or commercial
activities, those damages, or is likely to damage, the goodwill or reputation of another's
enterprise shall constitute an act of unfair competition, whether or not such act or practice
actually causes confusion.
 Any act or practice carried out or engaged in, in the course of any industrial or
commercial activity, that misleads, or is likely to mislead, the public with respect to an
enterprise or its activities, in particular, the products or services offered by such
enterprise, shall constitute an act of unfair competition.
Reference: http://www.customs.gov.lk
3.. Brand name infringement
Some specific elements measured in the Trademark Infringement are:
1. Strength of the mark
2. Proximity of the goods
3. Similarity of the marks
4. Evidence of actual confusion
5. Marketing channels used
6. Type of goods and the degree of care likely to be exercised by the purchaser
7. Defendant's intent in selecting the mark
8. Likelihood of expansion of the product lines

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4.Some argument support to Managing director
According to this scenario SOS is contemplating filling a case against POS for the following:
 POS is infringing the SOS’S Rights as the registered trade mark owner
 POS is guilty of unfair competition within the section 160 of IPA
According to Trademark Infringing POS used the name that is same as POS. brand name Extra
Special Beer is developed by SOS and its symbol is a tough macho man holding a glass of beer
is found in the label. Same as SOS label POS Created like a macho man showing thumbs up sign
was found in the label.
Brand name of SOS was developed with a specific target customer in mind and has spent million
in promoting. They just can’t give the benefits of their brand name to another new comer who
had not spent a cent in developing the brand. POS is also using a tough macho character that
spirits used in the logo although the man looks different. But this insignificant different because
there is an only different between the SOS creates Macho man holding a glass of beer and POS
creates like a macho man showing thumbs up sign. So it is misleading and the common man will
buy POS product assuming it is spirits Product.
When considering unfair competition we must consider some more facts such as
1. Similarity of the Brand marks - In this scenario similarity of the mark is high. POS’s
Brand name of ‘Extra special beer” and Macho man character are similar to SOS. So SOS
can sue the case against POS because of unfair competition and they already registered
their General brand name of SOS and macho Character. So they only have rights to use
this brand name.
2. Proximity of the goods – There is a higher proximity between the SOS Product and POS
product. Both products are beer. So there is higher probability to confuse about the
product by the customers.
V.I. Examples for unfair competition
 Trademark infringement - such as using the Coca-Cola® trademark on a soda
container manufactured by a competing beverage maker.
 You tube Vs Cn Boo (figure-1) – Same symbol used in both products

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 Samsung Galaxy Vs Apple iPad : (Figure 2) shows the similarity between the
Samsung Galaxy Tab and the Apple iPad; the cause of a patent infringement lawsuit
by Apple. Apple claims that Samsung infringed on their “utility” patents or how the
device is used. The judge actually held up the 2 devices for the Samsung lawyers to
examine simultaneously and when asked which is which the lawyers had a hard time
doing so. Anytime a product or service does the same thing a patented product or
service does, in shows the similarity between the Samsung Galaxy Tab and the Apple
iPad; the cause of a patent infringement lawsuit by Apple. Apple claims that Samsung
infringed on their “utility” patents or how the device is used. The judge actually held
up the 2 devices for the Samsung lawyers to examine simultaneously and when asked
which is which the lawyers had a hard time doing so. Anytime a product or service
does the same thing a patented product or service does, infringement occurs.
Obviously whoever holds the patent wins and the copycat loses.
 Lake Mary High School Vs DODGE : (Figure 3) shows an example of trademark
infringement of the Dodge Ram logo. A Florida high school used the logo and had
been putting it on everything from t-shirts to their gym floor. Although the logo didn’t
incorporate the outer “shield” component of the Chrysler owned logo, the automaker
approached the school board and the logo has now been dropped completely. Just
because the logo was modified a bit doesn’t mean it can be used without consent.
 STARPREYA COFEE vs. STARBUCKS COFEE ( Figure 3 )
So above factors also explains that SOS can sue the case against POS. In accordance with
Intellectual property act also (described in under the heading of Intellectual property act) tells,
Intellectual property is an intangible property. Intangible property has a unique features, created
by human intellect, covers the ideas, inventions, literary creations, unique names, models, logos.
So in this scenario also this Brand name and logo on label also created by SOS. They created it
through their ideas, research and development and market analysis, they invented this “EXTRA
SPECIAL BEER” and the macho man character.
In according to the act of Intellectual Property Act No: 36 2003, Section no 160, unfair
competition applied to the practice of endeavoring to substitute one’s own goods or products in
the market for those of another for the purpose of deceiving the public. In this scenario POS is
also trying to misleading the customer through the name of “Extra special Beer” and macho man
character.

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Act of the POS carried out likely to cause, confusion with respects to SOS products, so in the
IPA 2003 Act also that the confusion may in particular, be caused with respect to
(a) a mark, whether registered or not;
(b) a trade name ;
(c) a business identifier other than a mark or trade name ;
(d) the appearance of a product;
(e) the presentation of products or services ;
(f) Celebrity or a well known fictional character.
So activity of POS leads to the bad goodwill reputation because of any activity of POS cause to
the customer well. So SOS can sue against to POS.
5.Intellectual Property Act No 36 of 2003 Section 103(1)
A mark shall not be registered
(a) It consists of shapes or forms imposed by the inherent nature of the goods or services or
by their industrial function.
(b) Which consists exclusively of a sign or indication which may serve, in the course of
trade, to designate the kind, quality, quantity, intended purpose, value, place of origin or
time of production, or of supply, of the goods or services concerned ;
(c) It consists exclusively of a sign or indication which has become in the current language
of in the bona fide and established practices of trade in Sri Lanka, a customary
designation or the goods or services concerned.
(d) It is incapable of distinguishing the goods or services of one enterprise from those of
another enterprise.
(e) It consists of any scandalous design or is contrary to morality or public order or which, in
the opinion of the Director General or of any court to which the matter may be referred to
as the case may be, is likely to offend the religious or racial susceptibilities or any
community.
(f) It is likely to mislead trade circles or the public as to the nature the source, geographical
indication the manufacturing process, the characteristics, or the suitability for then
purposes, of the goods of services concerned.
(g) which does not represent in a special or particular manner the name of an individual or
enterprise ,

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(h) It is, according to its ordinal signification, a geographical name or surname.
(i) which reproduces or imitates armorial bearings, flags or other emblems, initials, names
or abbreviated names of any State or any intergovernmental international organization or
any organization created by international convention, unless authorized by the Competent
Authority of that State or international organization ;
(j) Which reproduces or imitates official signs or hallmarks of a State, unless authorized by
the Competent Authority of that State
(Reference: http://www.customs.gov.lk)
6.Generic signs or indications
Trademark distinctiveness is an important concept in the law governing trademark and service
marks. A trademark may be eligible for registration, if it performs the essential trademark
function, and has distinctive character. Registrability can be understood as a continuum, with
"inherently distinctive" marks at one end, "generic" and "descriptive" marks with no distinctive
character at the other end, and "suggestive" and "arbitrary" marks lying between these two
points. "Descriptive" marks must acquire distinctiveness through secondary meaning -
consumers have come to recognize the mark as a source indicator - to be protectable. "Generic"
terms are used to refer to the product or service it and cannot be used as trademarks.
A descriptive mark is a term with a dictionary meaning which is used in connection with
products or services directly related to that meaning.
An example might be Salty used in connection with saltine crackers or anchovies. Such terms
are not registrable unless it can be shown that distinctive character has been established in the
term through extensive use in the marketplace.
Word does not become non descriptive by being misspelt. E.g. Electrix for electrical apparatus
(http://en.wikipedia.org)

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7.Some argument support to Marketing Manager
The view point of the marketing manager is that it could be a tough legal bottle as ‘Extra
special beer” could be classified as description of the goods and it is argued that no person can
claim exclusive rights to the use of such words. He specially refer to see 103 (1) B of IPA 2003.
In accordance with IPA 2003 103 (1) act A mark should always have a distinctive character. If
not it cannot serve as a mode of distinguishing the goods or services of different enterprises.
E.g. Invented word will create a distinctive character.
Example : Distilleries Co. of SL Ltd VS Randenigala Distilleries Lanka Pvt Ltd. S.C. Appeal
No-38/99 - 2005/2006
According to marketing manager point of view “Extra Special Beer” is a type of high alcohol
Beers. Beers which are content high alcohol percentage as above mentioned may consider as
“Extra Special Beers”. Therefore it cannot consider as a newly developed product or a private
name which is belong to a particular person or a company.
.
So in this case SOS uses the common terms that mean not an invented word. So referring to
the section no 103 of IPA Act SOS cannot sue against to the POS.
Also the get up of “POS” is not similar to “SOS”, even though they have used their general
brand name as “POS”, Extra Special Beer, and tough macho man showing thumbs up sign in
their register mark. The characters which have been used for their trade mark are totally different
from the get up of “SOS”. Therefore “POS” total get up is appeared in a different way when
comparing with “SOS”.
Due to above factor common customers can identify “SOS” Brand clearly and that will not
mislead by “POS”. And customers who are buying continuous from “SOS” product they will not
change their consumer pattern to “POS”. So SOS cannot file the case against to POS.

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8. Recommendation & Conclusion
Arguments of both Managing Director and Marketing Manager have their own opinion but
referring to legal point and reality, we can consider both arguments are correct. But the argument
of marketing manager will be more reliable and logical when compare to managing directors. If
the company file the case, if the case favorable to against party, it is a big loss to company. And
competitor can enjoys more advantages from this case. This is consume more time and expense.
So we can advice to this company to not to go to a legal action.

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9. Annexure
Figure 1 Figure 2
Figure 3 Figure 4

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